Developer Seems To Think Trademark On 'Army Builder' Means No One Can Use It In Conversation

from the time-to-learn-some-trademark-law dept

One of the downsides of the modern movement to include trademark law under the same "intellectual property" umbrella as copyright and patent law, is that you get people who think that trademark grants the same sort of overreaching monopoly rights that copyright and patent law do. But trademark law is really quite different -- it's designed as something of a consumer protection law, meant only to prevent confusing uses of the trademark in a way that would imply a product is made or endorsed by someone else. But since people still think of trademarks like copyrights and patents, they often conclude that they can try to stop people who aren't violating the trademark at all.

Reader Reverand Dak alerts us to the news that Lone Wolf Development, a video game developer (who, we're told, has no relationship with Lone Wolf Roleplaying Games nor with Lone Wolf & Club manga), received a trademark on the term Army Builder in connection with a game that they created under that name. No problems there. But apparently Lone Wolf has been sending out cease-and-desists to websites that have nothing to do with Lone Wolf's Army Builder, and demanding that the phrase be blocked in forums on totally different subjects. Yes, they're saying that no one can use the term in conversation:

There are two things that need to be done. First of all, improper references to the Army Builder trademark on the forums must be addressed. This can be achieved in either of two ways, or potentially a combination of both, at your discretion. The first option would be to remove such posts. Since this could appear harsh and potentially disrupt forum discussions, an acceptable alternative would be to revise such posts to utilize a generic term (e.g. "roster construction tool", "list createor", or "points calculator") in place of the "Army Builder" name.

The second thing that needs to be addressed is that your forum users must be educated about the term Army Builder being a trademark and only applicable to our brand of products. This is necessary to avoid an ongoing problem and mitigate the future need for removal of improper posts. I'm sure you would also prefer that the forums continue to run smoothly and without interruption, so your assistance in getting forum users to utilize appropriate terms will benefit us all.

Or, you know, instead of educating all forum users around the world that they can no longer use the term "Army Builder" in conversation, how about we just educate the folks at Lone Wolf Development on the limits of trademark law and why it almost certainly does not apply to random forum users using the term in a way totally unrelated to Lone Wolf Development's mark.

Update: As pointed out in the comments -- and in a friendly email from Lone Wolf's lawyers -- Lone Wolf has backed down a bit and sorta, but not really, apologized. The guy claims that he's not a lawyer (though, whoever emailed us said they were a lawyer representing the company), and didn't quite realize what he was doing (and it showed). They still claim they want to block "potentially confusing and infringing uses" but our commenters raised some serious questions about the descriptive nature of the mark, and whether or not it should have been allowed in the first place. Still, let this be a lesson to folks, yet again, that acting as a bully tends to backfire.

So I couldn't comment on how stupid an army builder would be or say that I have built a better army builder on my website? Hmmm well in that case what about if I tell my friends about army builder or write a review of army builder and post it online and it just mentions army builder a few dozen times?

Not a table top gamer

I have no idea what an army builder is (except a guy who builds an army), but from the sounds of the comments on one of the linked to sites, it was a commonly used term before the trademark was filed. Even if it wasn't, the term is general now like xerox and kleenex (or a better example would be google).

Re: Not a table top gamer

Wow. I'm assuming there are ambulances rushing to the law departments at Xerox, Kleenex, and Google to treat the seizures you just caused.

First of all, even a common term can become a trademark, if the entity trying to build that mark establishes sufficiently in the mind of the relevant consumer a connection between that common term and a single source of some good or service.

Second of all, and more importantly (so why did I put it second? I don't know) Xerox, Kleenex, and Google are certainly NOT "general now." (By which I think you mean generic.)

Kleenex is a hard example, because even though (last I checked) it's still a registered mark, my personal experience is that it is - despite their likely efforts - teetering on the edge.

But Xerox... Xerox puts out ads all the time working against the use of "Xerox" to mean "photocopy." And if you write a published article somewhere making the mistake, they will likely tag you on it. And they're right. Especially since the Xerox "lock" on the photocopier market isn't what it used to be, the strength of the other brands (I'm thinking of Canon, particularly) makes it much easier to understand that the term Xerox refers to a machine actually from the Xerox company.

And Google is the best example of all. Because common use is actually supporting the brand identity, in a way that isn't the case with the other two. If I say I'm going to "Google something" (use as a verb is *usually* the beginning of the end for a mark), then I don't mean I'm going to Yahoo! or Bing or whatever to do the search, and I don't mean internet search in general terms. I mean I'm going to search the internet with the Google product. And I think that's the usage as it currently stands.

Point is, Army Builder might be descriptive, but can still be a trademark. And the others mentioned are clearly trademarks.

Army Builder

This Army Builder stuff is just crap. Lone Wolf (the company that created Army Builder) needs to understand that Army Builder should just be a term or phrase out there. If I say Army Builder I might be applying it to another Army Builder program of it may mean something completely different.

one more thing...

Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder Army Builder

A explination?

Re: A explination?

He has one good point and one (IMO) lousy one. One problem he has is with people releasing products called "Army Builder" or "xyz Army Builder". I see no problem with them taking action on those; it seems like a pretty clear trademark violation. The problem though, comes when he wants to stop people from using the phrase "army builder" in conversation. I think he has no legal leg to stand on there.

"a significant number of users on the forums also began using the term "army builder" in a generic fashion to describe all roster construction tools. This was a major problem brewing for us with regards to our trademark.

Two things were needed to rectify this situation. First, removal of all references to the other tools that were improperly using the name "army builder" was required, since those were instances of direct and actionable infringement of our trademark. Second, we asked for the assistance of Privateer Press in educating the user community that the Army Builder brand name can only be used in conjunction with the Army Builder brand of products from Lone Wolf Development..."

It may be a major problem for them, but it's exactly that: a problem for them. They should not be trying to regulated others' speech. His claim that "the Army Builder® brand name can only be used in conjunction with the Army Builder® brand of products" is just not true. Trademark violation can only occur in a narrow context. Hey, look at that army builder over there! I didn't just violate their trademark. Mike is right, they do need some education.

Interestingly, someone on that thread mentioned and linked to Techdirt. It was in the context of the Streisand Effect, which I think doesn't apply here, but I liked it anyway.

Irony

The crowning moment of hilarity for this whole thing is that the raison d'etere of this Army Builder program is to create "Army Lists" which describe your tabletop-gaming army. The game this program is most-used-for-by-far is Warhammer40k. Warhammer 40k is owned by Games Workshop, which has developed a tendency as of late to sue the bejeebus out of anyone who describes the 'point values' of their army units, so as to force people to buy the official "Army Books" in order to create their Army Lists. So Army Builder in-and-of-itself has had issues with trademark/copyright in the past, and for them to turn around and come after others for it is kind of amusing.

Apology

Re: Apology

His stance hasn't changed, he obviously consulted a lawyer who then pointed out that some of the language in his C&D was wrong. He's still standing firm on the fact that the request to stop using the term is a reasonable one.

army building strategy games

Generic term is generic

Now, they keep saying that they produced the term all by themselves, that it didn't become widespread until they had it trademarked, and people started using their product. Hogwash. They trademarked it 12 years ago. Sorry, I started gaming 30 years ago, and it was already a term being used for various miniatures games. I think someone needs to dig back through their older 'stuff' and find the term in use in some older books.

I loved Privateer Press's response to this. On their forums they just word-filtered Army Builder to something else.
Lone Wolf's suggested solution to moderate the term, and remove "inappropriate" use, but not to filter the term, was absolutely brilliant. Users could still advertise Army Builder for free, but they could outsource their IP enforcement to the forum moderators, again for free.
I'm not sure, but given the fact that they named their product using the most generic term imaginable, is this even enforcable? I mean, in terms of the issue where you lose your trademark if it enters common usage, what happens if it's already in common usage?

Descriptive and wouldn't harm anyway.

Army Builder, people have been building armies since the dawn of man. It is a descriptive term, if I am building a army of little lead toys and using Excel, then I am making a Army Builder. Microsoft doesn't go after Mike because I used the word Excel. Diluting the trademark ... Just because a photocopy is called a xerox or a nose wipe is called a kleenex doesn't mean that Xerox or Kimberly-Clark has lost business. Minolta or Procter & Gamble (Puffs) can't (and does not want to) use these terms.

I can call my unreliable PC that won't shutdown a toyota and Toyota can't come after me.

Seems to me that either some {lack of billable hours} lawyer got a hold of this guy or he has sudden epiphany that he is the Caesar, the one true Army Builder can tell people what they can talk about.

I have forwarded the information to the lead guitarist of Lone Wolf (a band formed in the late 70's) who would be interested in the possible trademark infringement the software company is making on the band's trademark.

Careful what you ask for

I have forwarded the information to the 767,000 page hits on Google that have Lone Wolf Company. A few of them surely will contact their lawyers for trademark and copyright infringement. Given the economy, I'm sure that there are lots of hungry sharks out there.

I can haz copyrite?

"An example of a condition assessment tool is U.S.
Army Builder, developed by USACERL. It is a database to prioritize facility projects
based on the facility’s current condition, available funding, and the remaining life of that
facility/system (Hassanain et al., 2003:52). U.S. Army Builder provides a consistent and
quick method to evaluate a facility’s condition."

prior art

almost ALL table top previous games and even the basic edition DnD use the term
in print.
this is whats wrong with the system

im a trademark

"YOU THINK"
now you all owe me money?
that took no brain power no innovation no creativity its a simple out and out way to PRICE GOUGE, which is not the original intent and i read the 1st lil bit and it just rambles on and on and on of the link above.

yes its stupid. and its so much of anyones vocabulary for building programs to simulate warfare that i argue such a thing also isnt patentable or trademarkable
MUCH LIKE that guy that got
YOUR FIRED done. it mocks the system when shit like that is done.
ALSO two things...
1st
anyone who tries to justify being a complete tool versus a incomplete one is NOT EVEN a tool as your not being useful at all try to debunk like the below
2nd
and example of using techdirt as a single word or tech dirt as two words are you speaking one is correct and no one would bother you
just like i own the trade marks to UHA and united hackers association and Disney used them without written permission in hackers two movie without compensating me ...did i sue HELL NO was nice shove to traffic at the website.
I could in fact sue to get ownership of the domains uha.com uha.org etc and do not instead i use a domain that is given and allowed freely by its owner as long as no pron is placed as advertising on said site. ( already thinking of the children there govt whiners )

Army Builder

I suppose I'm alone in this...

But after reading both of Lone Wolf's responses I can understand where they're coming from. I'm not a lawyer either (everything I know about trademark law I learned on TechDirt) but it seems they're being reasonable given the fact they are obligated to protect their trademark. I wouldn't want to be in his position myself. Meh.

Re: I suppose I'm alone in this...

You may very well be alone in this...well, you have The Anti-Mike as company, so make of that what you will...

However, I find the following statement by Lone Wolf to be telling:

"The problem stems from an issue called 'trademark genericization'. If a trademark is allowed by its owner to become a household word that is used to generically refer to the domain of the trademark, then the trademark can be declared to have become 'generic'."

Problem is, it's their own fault for using a term that begs to be used in a descriptive way. If I decided to create a new catapult, and trademarked the term "rock hurler", I shouldn't be very surprised if rock hurling became a popular pastime with kids, that those same kids, who might want to make their own catapults, called them rock hurlers. For crying out loud, I named my device for *what it does* instead of coming up with something original. I practically asked for trouble.

The trademark should have been refused as being too obvious, and I don't think they have a leg to stand on.

They should take a bullet shooter and hold it up to their eyeball container and pull the bullet shooter activator so that we can get back to the important work that we all do, like using our internet displayers to comment on the stupid activities of companies who make army builders.

They got their own mentioned removed...

I just read that Privateer Press set a filter that changed all references to Army Builder to that of a competing product. So even if someone said 'Army Builder is the most fantastic product ever', it would be changed to 'iBodger is the most fantastic product ever'

My Response to Lone Wolf's Interview on the D6 Generation Podcast

Reposted from D6 Generation:

Honestly, was the "Trademark Law" segment even necessary? Although it was delivered as an opportunity to "educate" gamers about the finer nuances of trademark law, it appeared, to me at least, as an underhanded attempt to allow Lone Wolf, unabashedly a paid sponsor of the D6G, a venue for backpedaling in order to justify their comments and actions.

One crucial part of this debacle that was conveniently downplayed was the actual tone of the letter sent to Privateer Press. In it one can reasonably infer that Lone Wolf was seemingly dictating that Privateer Press' "forum users must be educated about the term Army Builder" and that failure to cooperate could potentially result in "interruption" to the detriment of Privateer Press' forums. This lack of tact was dismissed by Lone Wolf as simply legal ignorance, but the actual intention is clear.

Moreover, Lone Wolf ends on this delightfully diplomatic note: "so your assistance in getting forum users to utilize appropriate terms will benefit us all." How, prithee, does this benefit Privateer Press, let alone the nebulous community of "us all"? If anything, it imposes the tedious task of requiring the forum moderators to filter the words "Army Builder" from countless posts and monitor future uses of the term. This is imposing a very inconvenient detriment on Privateer Press completely devoid of any perceived "benefit."

But the crux of this argument revolves around Trademark Law. As a 3rd year law student (3L) with a number of courses in Trademark law under my belt, I will direct you to the Trademark Dilution Revision Act of 2006, H.R. 683. H.R. 683 was (obviously) enacted to assist in the prevention of trademark dilution. However, congress tailored the act to be applicable to a select class of truly prominent, distinctive and renowned marks. The act defines a famous mark as one that is "widely recognized by the general consuming public of the United States." Congress, in part, expanded the law in order to prevent so-called "niche fame", where a mark is famous within only a narrow sub-community. Arguably, the term “Army Builder”, a trademark which is comprised of two generic terms common to the war gaming genre (unlike "Xerox," "Coca-Cola,” or "Rollerblade," which are universally recognized marks ), would likely not fall under the umbrella of dilution protection, unless Lone Wolf’s legal counsel could articulate a valid argument that the term "Army Builder" could be recognized by the general consuming public of the U.S., and not just the (niche) gaming community. This is highly unlikely. Also, the 9th Circuit held that “niche fame” is longer valid under the Lanham Act and CA State law; this is very telling as the 9th Circuit was one of the strongest supporters in favor of “niche fame” marks.

In summary, this was bad PR on the part of Lone Wolf, both in regard to reputation and (arguably) legality. Please don't let the D6G, the BEST gaming podcast out there, be residually affected by Lone Wolf's actions.

Original Post from Lonewolf in a letter to Privateer Press:
"There are two things that need to be done. First of all, improper references to the Army Builder trademark on the forums must be addressed. This can be achieved in either of two ways, or potentially a combination of both, at your discretion. The first option would be to remove such posts. Since this could appear harsh and potentially disrupt forum discussions, an acceptable alternative would be to revise such posts to utilize a generic term (e.g. “roster construction tool”, “list createor [sic]”, or “points calculator”) in place of the “Army Builder” name.
The second thing that needs to be addressed is that your forum users must be educated about the term Army Builder being a trademark and only applicable to our brand of products. This is necessary to avoid an ongoing problem and mitigate the future need for removal of improper posts. I’m sure you would also prefer that the forums continue to run smoothly and without interruption, so your assistance in getting forum users to utilize appropriate terms will benefit us all."
Source: http://www.tabletopgamingnews.com/2010/02/01/33231

I just want to clarify, this is not avideo game, it is an apoplications to make "army lists" for the playing of various specialist table top games typically involving small, lovingly painted tin (pewter and plastic) men. Such as Games workshop games Warhammer, 40k, and privateer's presses WarMachine.

Yes, I play all these games. Army builder is a commonly used phrase. There are many army builder's out there, one of which is called Army Builder, though it is by far the most popular. The term is descriptive, uses normal language, and probably predates the company. I think this makes it a lot different than Kleenex or Xerox.

Also, the company is like two guys, I even spoke to one of them once on the phone, discussing a purchase. (of an army builder called Army Builder).

Most of you seem angry, and legitimately so. The best thing you can do is to make sure that everyone who searches for 'army builder' ends up with a link to this page (and others like it) at the top of the list - and support developers who use reasonable trademarks.